Primetals Technologies Austria v Danieli & C. (CFI, 8 January 2026)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

By an order of 8 January 2026 (UPC_CFI_377/2025 and UPC_CFI_702/2025), the judge-rapporteur of the Milan Local Division rejected Primetals Technologies Austria’s request under Art. 59 UPCA and Rule 190 for an order against Danieli to produce documents on the supply of a plant to the Hoa Phat group in Vietnam (EP 2 624 977). The order confirms that this measure can neither cure negligence in earlier evidence preservation proceedings nor make up for a lack of reasonably available evidence.

Question

Can a patentee obtain the production of documents on a plant it claims to have discovered late, when it did not mention that plant in an earlier application to preserve evidence and relies only on photographs and in-house analysis?

Decision

Art. 59 requires reasonably available evidence sufficient to support the claims, precise identification of the fact to be proven and of the documents, and relevance and proportionality, with the burden of meeting those conditions on the applicant. The earlier application to preserve evidence of 5 July 2024 (UPC_CFI_337/2024) made no reference to the Hoa Phat plant. The judge doubted the alleged chance discovery, given the close monitoring of the market and the parties’ long-standing commercial relations. A late discovery due to negligence cannot be remedied by a request that essentially duplicates the earlier one. On the merits, the photographs were not sufficient evidence of infringement and the technical observations came solely from Primetals employees. The request was rejected. Review by the panel may be requested under Rule 333.

Key points for practice

• A request for production of evidence under Art. 59 cannot be used to recover ground that should have been covered in an earlier application to preserve evidence.
• Technical analysis carried out only by the applicant’s own employees is not sufficient reasonably available evidence.

Provisions applied

Agreement on a Unified Patent Court

Art. 59

Rules of Procedure

Rules 114, 171.2, 190 and 333

Directive 2004/48/EC

Art. 6(1)

Case law cited

Court of Appeal, 24 September 2024, UPC_CoA_298/2024, 299/2024 and 300/2024, Munich Local Division, 3 April 2025, UPC_CFI_846/2024, Mannheim Local Division, 20 October 2024, UPC_CFI_471/2023

Prepared by Dhenne Avocats from the official decision, consulted on 10 October 2026. The database is updated every week, on Friday. Only the official text is authoritative.